DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed August 5, 2026 is acknowledged.
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-20
Withdrawn claims:
None
Previously canceled claims:
None
Newly canceled claims:
None
Amended claims:
1, 2, 11, 12, 19
New claims:
None
Claims currently under consideration:
1-20
Currently rejected claims:
1-20
Allowed claims:
None
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites the limitation "the supplemented animal feed" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, upon which claim 5 depends, recites that the treated supplemented animal food ingredient consisting of an animal feed ingredient and a chemical mitigant. Thus, it is unclear if the supplemented animal feed ingredient is the same as that required of claim 1 because claim 1 does not disclose supplementation. For the purposes of examination, it is presumed that claim 5 recites “the animal feed ingredient”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-13, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Monteleone (US 2012/0219682 A1)(IDS reference filed 01/19/2024).
Regarding claims 1, 2, and 6, Monteleone teaches an antimicrobial composition (i.e., chemical mitigant) comprising an antimicrobial compound such as medium chain fatty acids and a phenolic based antioxidant that can include rosemary extract, oregano extract, and derivatives or a mixture thereof ([0022]; claims 1 and 2). Thus, Monteleone implicitly discloses a blend of medium chain fatty acids. Monteleone also teaches where the protein meal to be treated may be from porcine meat and bone meal, poultry by-product meal, or feather meal ([0042]; as required by instant claims 1 and 6). Although Monteleone teaches that the composition further comprises a carrier liquid such as water ([0019]), Monteleone also discloses an embodiment where the composition is used as a component of dry pet food applied to the surface prior to extruding ([0049]). In a case where water is used as the carrier liquid, it would have been obvious to apply to liquid composition and drive off the water to make a dry composition. After the after is driven off, the remaining composition would consist of the medium chain fatty acids and essential oil.
Although the cited prior art does not teach the amount of medium chain fatty acids by total weight of the animal feed ingredient, Monteleone teaches medium chain fatty acids are antimicrobial compounds (Abstract). Therefore, one of ordinary skill in the art would have adjusted the amount of medium chain fatty acids included in the composition based on the weight of the total food ingredient during routine optimization to find the amount of medium chain fatty acids that result in the desired level of antimicrobial properties. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Regarding claims 3-4, Monteleone teaches the composition comprising rosemary extract or oregano oil (Abstract).
Regarding claims 7 and 8, Monteleone teaches an antimicrobial compound selected from medium chain fatty acids and derivatives or a mixture thereof ([0022]; claims 1 and 2). Thus, Monteleone implicitly discloses a blend of medium chain fatty acids. Additionally, one of ordinary skill would recognize that the antimicrobial compound alone consists of a medium chain fatty acid (claim 7).
Regarding claim 9, although Monteleone does not explicitly teach wherein the blend of medium chain fatty acids consists of caproic acid, caprylic acid, and capric acid, the broad disclosure of medium chain fatty acids would encompass the inclusion of caproic, caprylic, or capric acid.
Regarding claim 10, Monteleone also teaches that the formula was useful for preventing growth of Salmonella ([0039]).
Regarding claims 11, 12, 15, and 19, Monteleone teaches an antimicrobial composition (i.e., chemical mitigant) comprising an antimicrobial compound such as medium chain fatty acids and a phenolic based antioxidant that can include rosemary extract, oregano extract, and derivatives or a mixture thereof ([0022]; claims 1 and 2). Thus, Monteleone implicitly discloses a blend of medium chain fatty acids. Monteleone also teaches that the formula was useful for preventing growth of Salmonella ([0039]). Monteleone also teaches where the protein meal to be treated may be from porcine meat and bone meal, poultry by-product meal, or feather meal ([0042]). Although Monteleone does not explicitly teach that the medium chain fatty acid has an aliphatic tail of 6 to 12 carbon atoms, medium chain fatty acids are known in the art to be fatty acid having an aliphatic tail of 6 to 12 carbon atoms. Evidence to support this is provided by the instant specification in [0013]. Although Monteleone teaches that the composition further comprises a carrier liquid such as water ([0019]), Monteleone also discloses an embodiment where the composition is used as a component of dry pet food applied to the surface prior to extruding ([0049]). In a case where water is used as the carrier liquid, it would have been obvious to apply to liquid composition and drive off the water to make a dry composition. After the after is driven off, the remaining composition would consist of the medium chain fatty acids and essential oil.
Although the cited prior art does not teach the amount of medium chain fatty acids by total weight of the animal feed ingredient, Monteleone teaches medium chain fatty acids are antimicrobial compounds (Abstract). Therefore, one of ordinary skill in the art would have adjusted the amount of medium chain fatty acids included in the composition based on the weight of the total food ingredient during routine optimization to find the amount of medium chain fatty acids that result in the desired level of antimicrobial properties. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Regarding claim 13, Monteleone teaches the composition comprising rosemary extract or oregano oil (Abstract).
Regarding claim 15, Monteleone teaches where the protein meal may be from porcine meat and bone meal, poultry by-product meal, or feather meal ([0042]).
Regarding claim 16, Monteleone teaches an antimicrobial compound selected from medium chain fatty acids (Abstract). Although Monteleone teaches that the composition further comprises a carrier liquid such as water ([0019]), Monteleone also discloses an embodiment where the composition is used as a component of dry pet food applied to the surface prior to extruding ([0049]). In a case where water is used as the carrier liquid, it would have been obvious to apply to liquid composition and drive off the water to make a dry composition. After the after is driven off, the remaining composition would consist of the medium chain fatty acids and essential oil. Monteleon also teaches that the composition comprises medium chain fatty acids and derivatives or a mixture thereof ([0022]). Thus, Monteleone implicitly discloses a blend of medium chain fatty acids.
Regarding claim 17, although Monteleone does not explicitly teach wherein the blend of medium chain fatty acids consists of caproic acid, caprylic acid, and capric acid, the broad disclosure of medium chain fatty acids would encompass the inclusion of caproic, caprylic, or capric acid.
Regarding for claim 18, although Monteleone does not explicitly teach wherein the blend of medium chain fatty acids consists of three or more fatty acids, Monteleone’s broad disclosure of medium chain fatty acids and derivatives or mixtures thereof ([0022]) encompass the claimed composition consisting of three or more medium chain fatty acids.
Regarding claim 20, although Monteleone does not explicitly disclose wherein the blend of medium chain fatty acids consists of three or more medium chain fatty acids at a ratio of about 1:1:1, Monteleone’s broad disclosure of medium chain fatty acids and derivatives or mixtures thereof ([0022]) encompass the claimed composition consisting of three or more medium chain fatty acids in the claimed ratio.
However, in the same field of endeavor, Folan teaches that the composition comprises one or more free fatty acids having from 6 to 12 carbon atoms (i.e., medium chain fatty acids) and provides a list of six fatty acids having between 6 to 12 carbon atoms ([0013]; [0016]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include 3 or more of the medium chain fatty acids from Folan in the composition of Monteleone. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Although the cited prior art does not teach the ratio of medium chain fatty acids, Folan teaches that free fatty acids have limited microbicidal effect at temperatures below their melting points, and that blends of high and low melting point oils have depressed melting points ([0092]-[0093]). Therefore, one of ordinary skill in the art would have adjusted the ratio of fatty acids during routine optimization to find the ratio that resulted in the melting point for the desired antimicrobial properties. MPEP §2144.05(II) states where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Monteleone (US 2012/0219682 A1) (IDS reference filed 01/19/2024) in view of Sunvold (US 2010/0303966 A1) (IDS reference filed 01/19/2024).
Regarding claims 5 and 14, the cited prior art does not teach wherein the animal feed ingredient is selected from the group consisting of vitamin D, lysine hydrochloride, choline chloride, soybean meal, or a combination thereof.
However, in the same field of endeavor, Sunvold teaches that pet food (Title) includes common protein sources such as poultry by-product meal or soybean meal ([0036]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the poultry by-product meal in the pet food taught by Monteleone ([0049]) with the use of soybean meal as the protein source as taught by Sunvold. The claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element for another and yield predictable results to one of ordinary skill in the art, see MPEP §2143(B).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-18 of U.S. Patent No. 10,772,343 B2 (hereinafter ‘343).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of the instant application are directed to a treated supplemented animal food ingredient comprising a chemical mitigant, the chemical mitigant comprising a blend of medium chain fatty acids, an essential oil blend, or both. Claims 14-18 of ‘343 are drawn to an animal feed comprising a medium chain fatty acid and an essential oil. Although the reference application is silent regarding the medium chain fatty acid being a chemical mitigant, the recitation of the medium chain fatty acid acting as a chemical mitigant is interpreted as the intended use of the composition. Thus, the composition of ‘343 is not patentably distinct from that of the instant application.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1-4, 6-13, and 15-20 over Monteleone and Folan: Applicant’s arguments filed August 5, 2026 have been fully considered but they are not persuasive.
Applicant argued that Monteleone teaches that in order to be effective, an antimicrobial composition also must include an antioxidant solution, and as such fails to teach or suggest a treated supplement feed consisting of the claimed invention (Remarks, p. 6, ¶ 4).
This argument has been considered but is not persuasive. As described in the 35 USC §103 rejection above, Monteleone discloses that the phenolic based antioxidant that can include rosemary extract, oregano extract, and a mixture thereof (Abstract). Although Monteleone teaches that the composition further comprises a carrier liquid such as water ([0019]), Monteleone also discloses an embodiment where the composition is used as a component of dry pet food applied to the surface prior to extruding ([0049]). In a case where water is used as the carrier liquid, it would have been obvious to apply to liquid composition and drive off the water to make a dry composition. After the after is driven off, the remaining composition would consist of the medium chain fatty acids and essential oil.
Applicant also argued that Folan discloses antimicrobial compositions with at least one additional ingredient critical to the function (Remarks, p. 7, ¶ 2).
Following amendment to claim 1, a new grounds of rejection has been entered that does not rely upon Folan. As such, this argument is moot.
Claim Rejections – 35 U.S.C. §103 of claims 5 and 14 over Monteleone, Folan, and Sunvold: Applicant’s arguments filed August 5, 2026 have been fully considered but they are not persuasive.
Applicant's arguments as related to claim 1 were determined to be unpersuasive as detailed previously herein. Examiner further maintains that the dependent claims are properly rejected in light of the cited combinations of prior art as described in the claim rejections.
The rejections of claims 1-20 have been maintained herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached M-Th 8:00a-4:00p, F 8:00a-1:00p ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.S.H./Examiner, Art Unit 1793 /Michele L Jacobson/Primary Examiner, Art Unit 1793
Prosecution Insights